Amanresorts wins key trade mark case

April 30 2009

Amanresorts Limited and Amanresorts International Pte Ltd (Amanresorts) are two companies under the umbrella of the Amanresorts Group. Amanresorts are the proprietors of various trade marks comprising the word Aman and/or the prefix Aman including Amanusa around the world (but their Amanusa mark in Singapore was not renewed at the relevant time). Amanresorts operates many exclusive and luxurious hotels and resorts around the world and Amanusa is one of Amanresorts' exclusive high-end resorts in Bali.

In 2006, Amanresorts discovered that a Singapore real estate developer, Novelty Pte Ltd (Novelty), had named one of its local condominium projects Amanusa. Consequently, Amanresorts, who did not have a trade mark registration for Amanusa in Singapore, brought an action of passing off against Novelty. Amanresorts also claimed that their Aman marks were well known and therefore sought protection under Section 55 of the Singapore Trade Marks Act (the Act).

Amanresorts presented substantive evidence to prove their case and claimed that Novelty's use of their trade mark would lead to the "gradual whittling away" of their trade mark, the loss of branding fees and the loss of opportunity "to use the name Amanusa or other Aman-prefixed name for their own real estate developments in Singapore...".

Novelty, on the other hand, contended that Amanresorts did not have the requisite goodwill and reputation in their Aman marks in Singapore. Further, the customers who purchased or were interested in purchasing a unit in the condominium project were not persuaded by the Amanusa name, and thus the Amanusa name did not help in their sales.

Further, they argued that they had invented the name Amanusa by combining two common Malay words together. Another argument they raised in support of their case was the fact that the Street and Building Names Board (Board) had approved the name unconditionally, which would not have been the case if they were aware of another development with a similar name and the possibility of a likelihood of confusion. Since the name was approved unconditionally by the Board, Novelty did not conduct any further checks on the name Amanusa.

In 2007, the High Court decided that if Novelty continued to use the name Amanusa for their development, this was likely to cause damage to the goodwill of Amanresorts. Based on the facts and evidence presented, Amanresorts won their legal action against Novelty. The High Court accordingly decided that there was passing off, i.e. there was goodwill and reputation in the Aman and Amanusa trade marks; there was a real risk of misrepresentation (a likelihood of confusion); and there was a probability of damage (intangible damage) to Amanresorts if Novelty were allowed to maintain the name of its project as Amanusa. The High Court also agreed that the Amanresorts' trade marks are well known and granted the injunction to restrain Novelty from using the name Amanusa. In view of this decision, Novelty was ordered to change the name of its condominium project.

As a result of the High Court's decision, this case became a landmark decision for Singapore as it was the first case where the Singapore Courts had, in recognising a trade mark as being well known, restrained another party from using it.

Subsequently, Novelty filed an appeal against the High Court's decision to the Court of Appeal, the highest court of Singapore. In April 2009, the Court of Appeal dismissed Novelty's appeal, with costs.

In view of this decision, Novelty has no choice but to change the name of its condominium project. However, all is not lost for Novelty as the buyers of Novelty's condominium project will not be able to simply back out of their purchases in view of the name change, as a result of a clause in the agreement between the buyers and Novelty.

The Court of Appeal's decision has resulted in Amanresorts having succeeded in their claim of passing off and their claim for protection from infringement under the Act, despite not having registered Amanusa for trade mark protection in Singapore.

The Court of Appeal further sought to clarify (albeit obiter) the issue of whether the relevant provision under Section 55 of the Act incorporates a "likelihood of confusion" requirement in relation to marks that are "well known" in Singapore. The Court of Appeal took the view that the widespread availability of protection to well-known trade marks and the more extensive protection (not requiring likelihood of confusion) to marks that are "well known to the public at large" in Singapore, should be balanced by requiring a likelihood of confusion to be shown in relation to marks that are "well known" in Singapore. In this regard, a trade mark need only be known to any relevant sector of the Singapore public to be regarded as "well known" in Singapore.

The Court of Appeal's decision serves to affirm a warning to the business community in Singapore not to ignore the risks associated with the use of marks that could be well known, even if these marks are not protected by trade mark use or registrations in Singapore.